Autozone, Inc.v.Int’l. Web Broad-casting Corp.

Trademark Trial and Appeal Board

Sep 27, 2000

No. 91106669 (T.T.A.B. Sep. 27, 2000)

Paper No. 27
GFR
9/27/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Autozone, Inc.
v.
International Web Broadcasting Corporation, by change of
name from Internet World Broadcasting Corporation1
_____
Opposition No. 106,669
to application Serial No. 75/044,430
filed on January 16, 1996
_____
Alan S. Cooper and Eric Fingerhut of Shaw, Pittman, Potts &
Trowbridge for Autozone, Inc.
Eleanor Spillman, Esq. for International Web Broadcasting
Corporation.
______
Before Simms, Hanak and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
International Web Broadcasting Corporation has filed an
application to register the mark CAR ZONE for services
identified as "providing an on-line computer database via

1 It appears applicant has twice recorded its change of name in
the Assignment Branch, at Reel 1775, Frame 0568, and at Reel
1789, Frame 0849. On applicant’s "List of TTAB Depositions
Taken," filed January 14, 2000, applicant reports a further
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 106,669
2
the global computer information network and electronic
bulletin board featuring advertisement and marketing
information for others about automobile and motorcycle-
related goods and services; and on-line ordering services
featuring automobile and motorcycle-related goods and
services," in Class 35.2 The application includes a
disclaimer of the exclusive right to use "CAR."
AutoZone, Inc. has opposed registration on the grounds
that since "long prior to" the filing date of applicant’s
application, opposer’s predecessor adopted and used, and
opposer continues to use, in commerce, "the trademark and
service mark AUTOZONE3 for, inter alia, a variety of retail
automotive products and for retail auto parts store
services"; that "long prior to" the filing date of the
opposed application, opposer "adopted, used and is still
using in commerce AUTOZONE.COM as [a] domain name and
service mark for "on-line electronic services namely, on-
line ordering services in the field of automotive parts and
accessories, and providing information regarding automotive
repair and maintenance via a global computer network," and
that opposer, on February 7, 1996 filed to register

change of name to IWBC.Net Corporation, but this apparently has
not been recorded.
2 Serial No. 75/044,430, filed January 16, 1996, based on
applicant’s allegation of a bona fide intention to use the mark
in commerce.
3 Opposer relies on registrations for the mark in both typed form
and in stylized form with a design element.
Opposition No. 106,669
3
AUTOZONE.COM as a service mark for these services4; that
opposer "duly registered AUTOZONE.COM as an Internet domain
name" on September 26, 1995; that purchasers of its goods
and services recognize AUTOZONE as an indication of origin
in opposer; that its mark "has become exceedingly well-
known"; that opposer’s mark and applicant’s mark "are
identical in terms of their meaning, and accordingly are
confusingly similar"; that the goods and services described
in opposer’s registrations and in its approved application
"are commercially related" to the services in applicant’s
application; and that consumers will be confused or
deceived.
Applicant has expressly or effectively denied the
salient allegations of the notice of opposition. Applicant
asserts that "the apparent differences in sight, sound,
connotation and commercial impression, as well as the
differences in services and channels of trade, show that
there exists no likelihood of confusion." Applicant also
states that "[s]hould the Board determine that Opposer is
entitled to judgment with respect to Applicant’s services as
broadly defined in the application, Applicant claims the
following affirmative defense in the alternative." The
defense asserts:

4 Serial No. 75/054,355. Office records reveal that a Notice of
Allowance issued on August 19, 1997 and that opposer has obtained
five extensions of time to file a statement of use.
Opposition No. 106,669
4
5. Applicant has adopted and has begun actually
marketing the service mark CAR ZONE in association
with an Internet Web Site that offers links to
other, independently owned and operated, Internet
Web Sites, each site for providing an on-line
computer database via the global computer
information network and electronic bulletin board
featuring advertisement and marketing information
for others about automobile and motorcycle-related
goods and services; and on-line ordering services
featuring automobile and motorcycle-related goods
and services.
6. Applicant’s service does not offer content
under the name CAR ZONE. On the contrary, CAR
ZONE is an on-line infrastructure, linking users
to Web Sites controlled and operated by
independent entities, each bearing the trademark
or service mark of that entity. …In order for the
user to obtain specific, automobile related
information, the user must link to one of these
independent Web Sites.
7. Applicant's services provided through CAR ZONE
is one [sic] among many services organized into an
on-line infrastructure known as New Atlantis.
Along with CAR ZONE, users of New Atlantis can
access Web sites concentrating on a number of
different professions or areas of interest. …
8. Based on, among other things, the actual
services offered by Applicant in association with
the service mark CAR ZONE, the independent nature
of the Web Sites containing specific information,
and the family of "Zone" marks utilized by
Applicant, there is no likelihood of confusion
with respect to Opposer's mark.
9. Even if the Board ultimately finds that Opposer
is entitled to judgment with respect to
Applicant's services as broadly identified,
Applicant would be entitled to a registration of
its mark with a restricted identification
reflecting the actual nature of its goods [sic].

Opposition No. 106,669
5
The record includes the pleadings, the opposed
application and, as described by opposer in its brief, the
following items submitted by opposer: the testimony
deposition of Anthony Dean Rose, Jr., opposer’s senior vice
president, advertising and customer satisfaction, with
exhibits5; applicant’s answers to certain of opposer’s
interrogatories; applicant’s responses to certain of
opposer’s request for admissions; status and title copies of
opposer’s pleaded registrations; and dictionary definitions
of "auto," "automobile," and "car."
Applicant did not submit any testimony or other
evidence. Opposer filed a brief; applicant did not. An
oral hearing was not requested.
Insofar as opposer relies on its pleaded registrations,
priority of use is not an issue, because the record shows
that the registrations are subsisting and owned by opposer.
See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974). Insofar as opposer
relies on its use of AUTOZONE.COM, opposer has failed to
prove priority. While the unchallenged testimony of
opposer’s witness establishes that opposer maintains a Web
site with the address AUTOZONE.COM, there is no testimony to
as to the date of registration of that designation as an
Internet address, or as to first use of that designation as

5 Applicant did not attend and cross-examine the witness.
Opposition No. 106,669
6
an address. Thus, the allegations in the notice of
opposition as to registration of the designation as an
Internet address and as to use of the designation as a mark
since prior to the filing date of applicant’s application
both are unproved.
Turning to the issue of likelihood of confusion, we
find upon consideration of the pertinent factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973), that confusion as to source or
affiliation or sponsorship is likely in this case. In the
du Pont analysis, two key considerations are the similarity
of the marks and the similarity or commercial relatedness of
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29. In the case at hand, other
key du Pont considerations include the fame of opposer’s
mark, as evidenced by its widespread promotion, and the lack
of evidence that there are any other marks at all similar to
opposer’s in use for similar goods or services. We consider
first, the marks.
While we must consider the marks in their entireties,
it is well settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Opposition No. 106,669
7
Applicant has disclaimed rights in "CAR," and the
record establishes that "car" and "auto" or "automobile" are
interchangeable terms.6 Disclaimed or descriptive elements
in marks typically are less significant. See Tektronix,
Inc. v. Daktronics, Inc., 189 USPQ 693 (CCPA 1976). In
contrast, there is nothing in the record to indicate that
"ZONE" is anything other than arbitrary for opposer’s and
applicant’s respective goods and services. Moreover,
opposer has submitted evidence sufficient to support its
claim that its mark is "exceedingly well-known"7 and there
is no evidence that any other "Zone" marks are in use for
the involved goods or services or any related thereto.
In short, we find opposer’s mark strong and widely
promoted among consumers, and we find applicant’s mark
similar in sight and sound and nearly identical in
commercial impression. Given the fallibility of the normal
consumer’s recollection of marks, we find the nearly
identical commercial impression created by the marks to be
quite significant. See In re Lamson Oil Co., 6 USPQ2d 1041,

6 The evidence on this point includes the dictionary definitions
made of record by opposer and the unchallenged testimony of
opposer’s witness.
7 Opposer’s witness testified to use of its registered marks in
2,124 stores in 38 states and opposer has submitted evidence of
national advertising that has reached even into states where
opposer has not yet expanded its operations. Opposer’s witness
testified that, as a result of its national advertising, opposer
has received calls from consumers inquiring when opposer would
open stores near them.
Opposition No. 106,669
8
1042 n.4 (TTAB 1988) (one element in the sight, sound and
meaning trilogy can, under the circumstances of a particular
case, be sufficient to find marks confusingly similar).
Considering the respective goods and services, we note
that much of applicant’s answer and some of its responses to
opposer’s interrogatories attempt to differentiate
applicant’s actual services from those covered by the
identification of services in its application. It is well
settled, however, that our consideration of the question of
likelihood of confusion must be based on the identifications
in opposer’s pleaded registrations and in applicant’s
application. See Octocom Systems Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990), and Canadian Imperial Bank of Commerce, National
Association v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815-16 (Fed. Cir. 1987).
Applicant’s identification includes "on-line ordering
services featuring automobile and motorcycle-related goods
and services." Opposer has subsisting registrations for its
mark, in both typed and design form, for various automotive
parts and supplies8 and for "retail auto parts store
services."

8 As for goods, the registrations of record cover automotive
batteries, automobile and truck engines, cleaning preparations
for hands and automobiles, vehicle engine thermostats, and
vehicle engine belts.
Opposition No. 106,669
9
There is, of course, no question that the use of
similar marks for goods on the one hand and related services
involving those goods on the other may, in appropriate
cases, be likely to result in confusion in trade. See,
e.g., Steelcase Inc. v. Steelcare Inc., 219 USPQ 438, 435
(TTAB 1983) (STEELCARE for refinishing of furniture and
office equipment held likely to be confused with STEELCASE
for office furniture and accessories). See also, Safety-
Kleen Corp. v. Dresser Industries, Inc., 518 F.2d 1399, 186
USPQ 476, 480 (CCPA 1975).
Moreover, we take judicial notice of the increasing use
of Internet Web sites as an additional channel of trade for
traditional retail outlets.9 Thus, many of the same
consumers that have used opposer’s stores over the years,
finding applicant’s Web site, may be confused and believe it
to be somehow sponsored by or affiliated with opposer.

9 We find this a fit subject for judicial notice as a fact
"generally known". Cf. General Mills Fun Group, Inc. v. Tuxedo
Monopoly, Inc., 204 USPQ 396, 400 (TTAB 1979), aff’d, Tuxedo
Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335,
209 USPQ 986, 988. We also note the following:
World Wide Web The largest collection of online
information in the World. The Web is an Internet
facility that has become synonymous with the Interent
[sic].
…[T]he Web is turning into "the" worldwide
information system for education, research,
entertainment and commerce.
The Computer Glossary The Complete Illustrated
Dictionary 470 (8th ed. 1998)
Opposition No. 106,669
10
We find that if applicant uses its mark, for its
identified services, there will be a likelihood of confusion
among consumers, in view of opposer’s prior registration and
use of its mark for various automotive goods and for its
retail auto parts store services.
We note that applicant pleaded, in the alternative,
that confusion of consumers is unlikely but that, were we to
find otherwise, then applicant is entitled to registration
of its mark "with a restricted identification reflecting the
actual nature of its goods [sic]." We view this as an
attempt to make a claim under Section 18 of the Trademark
Act, 15 U.S.C. §1068. We have no testimony or evidence from
applicant, however, regarding the exact nature of its
services. Moreover, it is entirely unclear from the
pleadings and applicant's responses to opposer's
interrogatories whether applicant has begun use of the mark
and, if so, for what precise services. In this regard, we
compare applicant's responses to opposer's interrogatories
23 and 24, applicant's denial of paragraph 2 in opposer's
notice of opposition, and applicant's affirmative defense.
Applicant denied opposer's allegation that applicant
made no use of its mark prior to filing the involved
application (answer, ¶2), and the allegations in applicant's
affirmative defense discuss applicant's use of the mark. In
contrast, applicant's interrogatory responses deny any use
Opposition No. 106,669
11
of the mark: "Applicant has not commenced use of the mark.
Applicant filed an Intent to Use Application. Applicant
will use the mark pending the outcome of the Opposition
period [sic]." (Response to Opposer’s Interrogatory 23).
Under the circumstances, applicant has failed to
apprise opposer and the Board of the precise limitation on
applicant’s identification that would support a claim under
Section 18. Moreover, for the Board to grant relief under
Section 18, applicant would have had to show that it is
actually using its mark and the precise nature of the
services it is using the mark for. Having failed to do so,
applicant’s affirmative defense has not be considered.
Decision: The opposition is sustained and registration
to applicant is refused.
R. L. Simms
E. W. Hanak
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board